SEARCH

Monday, September 21, 2009

REVERSED

1700 Chemical & Materials EngineeringEx Parte GilbertSMITH 102(e)/103(a) General Motors Corporation If a 37 CFR § 1.131 affidavit is relied on, then the applicant needs to show priority with respect to only so much of the claimed invention as the reference discloses, as indicated by In re Stempel, 241 F.2d 755, 760 (CCPA 1957).

The Supreme Court has defined the term ‘‘machine’ is a concrete thing, consisting of parts, or of certain devices and combination of devices.’ Burr v. Duryee, 68 U.S. 531, 570 (1863). This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’ Corning v. Burden, 56 U.S. 252, 267 (1853).

We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). The challenge is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

[W]hen the claimed structure performs differently from the prior art, a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art).